Key aspects of intellectual property right assignments Definition of IP rights
1. Does the definition of "Intellectual Property Rights" in Standard document, Assignment of intellectual property rights: Cross-border: Clause 1.1 include any rights that are not recognised in your jurisdiction? If yes, what are those rights?
2. Should this definition be amended to include any additional rights that are recognised in your jurisdiction? If yes, what are those rights?
No amendments are required. In any case, the phrase "and all other intellectual property rights" includes any rights not expressly mentioned.
Assigning the benefit of licences to use IP rights
3. Subject to any restrictions in the terms of the relevant licence, is it possible to assign the benefit of a licence to use IP rights? If yes:
Are there any restrictions on this (such as on the identity of the assignee or the price of the assignment)?
Does the assignment have to comply with any particular formalities to be valid and enforceable?
Does the burden of the licence automatically pass to the assignee along with the benefit?
Under Chapter VI Licences and transmission of rights, especially Article 62 of the Industrial Property Law (Ley de la Propiedad Industrial), it is possible to assign the benefit of a licence to use IP rights conferred by a registration, such as trade marks, software rights, database rights and domain names, among others, or rights deriving from a patent application in progress.
Licences in relation to those rights can be assigned in whole or in part, subject to the terms of the licence and formalities established by common legislation.
Registration of the assignment of the licence with the Institute of Industrial Property (IMPI) is required for all IP rights.
To be valid and binding, a licence must satisfy certain substantive legal formalities, including all of the following:
Consent of the parties who must have legal capacity.
In writing and registered with the Institute of Industrial Property, if required. In order for the assignment of rights to be effective against third parties, the assignment must be registered before the IMPI.
The purpose of the agreement is legal (not unlawful).
Performance is possible.
The content of the licence is certain.
Once the agreement is entered between the parties, it has full effects and is enforceable between them, but the parties can register a short version of the agreement in order to produce effects against third parties, that is, the recognition of rights exceeds the scope of the parties.
Assigning future intellectual property rights
4. Is it possible to assign future IP rights? If yes, does an assignment have to comply with any formalities additional to the existing assignment, or do any additional documents need to be entered into, for that future assignment to be valid and enforceable?
It is possible to assign future IP rights by contractually assuming the obligations. According to the Preparatory Agreement provisions, the Civil Code establishes that the parties can assume to be contractually bound to enter into an agreement in the future once the existence of the IP right occurs, or the parties can sign a letter of intent establishing a condition subject to the existence of the IP rights.
For a future assignment to be valid and enforceable, it must be in writing and contain the essential elements of the existing assignment.
These obligations can be assumed by attaching an annex to the existing assignment, subject to conditions.
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Originally published in Thomson Reuters
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.